Tuesday, April 05, 2005

Trademarks, Service Marks and Trade Names in California

That is the difference between a Trademark, Service Mark, and Trade Name?

Trademark - A word, name, symbol, or device, or any combination thereof adopted and used by a person to identify goods made or sold by him/her and to distinguish them from goods made or sold by others. Business & Professions Code § 14207.

Service Mark - A mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others. Business & Professions Code § 14206.

Trade Name - A word, name, symbol, or device, or any combination thereof used by a person to identify his business, vocation, or occupation, and distinguish it from the business, vocation, or occupation of others. Business & Professions Code § 14208.

Where is a trade name filed?

California law does not provide for the filing of trade names or fictitious business names at the state level. A trade name or fictitious business name (often called a d.b.a.) should be filed with the clerk of the county in which the company is doing business. Business & Professions Code §§ 14400 & 17910.

What is a specimen?

A specimen demonstrates how the mark is being presented to the public. Specimens can be in a wide variety of forms.

For a trademark, the specimen can be a label of the product sold or a photograph of the mark on the product itself, if the product is too big or bulky to send through the mail. For example, if the mark is printed on the front of t-shirts, three photographs of the mark on the t-shirt could be sent rather than sending three t-shirts.

For a service mark, the specimen can be a sample of how the services are being advertised. A "yellow page" advertisement, a flyer, a business card, or a photograph of a billboard advertising the services could be submitted. The specimen for a service mark must demonstrate the nature of the services rendered. The specimen must be something that could be handed to any average member of the public and that person would immediately know what services are being provided by the company using the mark.

Can photocopies or drawings of the actual specimen be submitted if the business has not started operating?

Photocopies, drawings, computer printouts, or camera ready layouts are not accepted as specimens. The company must have gone into production and have released the product or service into the market prior to registration of the trademark or service mark with the Secretary of State.

If I am just starting and have no specimens, what do I do?

You must either be advertising your services and provide us with the advertisement, or you must have tags, labels, or photographs of your products bearing the mark you wish to register. You cannot register a trademark or service mark until you have provided your services or sold your product with the mark you wish to register. In order to register your mark with the Secretary of State, you must have specimens. The Secretary of State uses the specimens to make sure the mark is being used in commerce and to make sure the word or phrase that is being registered functions properly as a trademark or service mark. If you do not have specimens, you must wait until you have proper specimens before you may register the mark.

How long is a trademark or service mark registration active?

The registration is active for ten years. At the end of ten years, the mark may be renewed for another ten years. The mark may be renewed every ten years as long as the mark is in continual use.

Can a trademark and service mark be filed on the same application?

Trademarks and service marks must be filed on separate applications. They require separate fees and submittal of separate specimens. The fee for filing a trademark or a service mark is $70.00 per mark. An application may be downloaded from the California Secretary of State or requested via telephone or written request to the Trademark Unit of the Secretary of State. Please see contact information for the correct address and telephone number.

Can a name and a design be filed on the same application?

If a name and design are used together and constitute one complete mark, they may be filed on the same application. If a name and design are used separately, as two separate marks, then two separate applications with two fees and two sets of specimens must be submitted.

If a trademark or service mark is registered at the federal level, does it have to be registered at the state level?

No, however it is highly recommended that the mark be registered at the state level as well to have a record of the mark.

Does registering a trademark or service mark give exclusive rights to the mark?

Registration in and of itself does not guarantee exclusive ownership of a mark. A trademark attorney should be consulted should this be an issue for you.

What is the federal patents/trademarks office address?
Commission of Patents and Trademarks
Washington, DC 20023

This publication is NOT INTENDED TO SERVE AS A SUBSTITUTE FOR LEGAL ADVICE. Please consult with a licensed attorney if you require legal advice.

About the author: Carl H. Starrett II, Esq., has been a licensed attorney since 1993 and is a member in good standing with the California State Bar and the San Diego County Bar Association. Mr. Starrett practices in the areas of bankruptcy, business litigation, construction, corporate planning and debt collection.

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